Archive for December, 2014

It is not uncommon during oral arguments to hear advocates refer to a particular appellate judge’s holding in a previous case. Advocates are particularly fond of doing this during oral argument when they refer to an opinion that Judge Rich or a present panel member authored for the court. During an oral argument at the Federal Circuit, Judge Moore pointed out to an advocate that holdings are by the court — not a particular judge. The author of an opinion is merely listed as author on behalf of the majority of the panel. In fact, Judge Moore used the words “pandering” and “insulting” in her pointed remarks to the advocate. You can listen to those remarks here: [Listen].

(I’ve taken out all reference to the particular attorney. Frankly, advocates make such references quite often; so, the advocate who was chastised is not alone.)

I was listening to the oral argument recording of B&B Hardware v. Hargis and was struck by the opening lines of the argument:

The Lanham Act contains only one concept of likelihood of confusion. That is why two tribunals in this case decided the same issue, and that is why issue preclusion is appropriate. Whether a court is considering registration or infringement or both at the same time, the statutory test is the same, whether the resemblance of the marks as used on particular goods would give rise to a likelihood of confusion or mistake or deceit.

It is uncanny how germane that analysis is to the argument over the proper test for patent eligibility. Namely, the Supreme Court has distorted the test for patent eligibility under 35 U.S.C. §101 into such a cockeyed farce that the meaning of invention under §101 is totally out of alignment with other sections of the Patent Act. Under §§102, 103, 271, etc. an invention is assessed by looking at all claim limitations. However, when it comes to §101, the Court has deviated by disregarding claim limitations as mere pre-solution or post-solution activity. Moreover, the Court has effectively regressed to a “gist of the invention” analysis that it previously repudiated in Aro I and Diehr.

To modify the argument above and apply it to patent eligibility, one might say:

The 1952 Patent Act contains only one concept of invention. Whether a court is considering patent eligibility or infringement or both at the same time, the statutory test is the same, whether all claim limitations are satisfied.

I was on vacation during the first week of December and completely overlooked the fact that the Supreme Court heard oral argument in two trademark cases during that time.

In Hana Financial, Inc. v. Hana Bank, the Court is addressing the issue of whether the jury or the court determines whether use of an older trademark may be tacked to a newer one. You can listen to the oral argument here: [Listen].

In B&B Hardware, Inc. v. Hargis Industries, Inc., the Court entertained the issues of (1) whether the Trademark Trial and Appeal Board’s finding of a likelihood of confusion precludes respondent from relitigating that issue in infringement litigation, in which likelihood of confusion is an element; and (2) whether, if issue preclusion does not apply, the district court was obliged to defer to the Board’s finding of a likelihood of confusion absent strong evidence to rebut it. You can listen to that oral argument here: [Listen].

The U.S. Court of Appeals for the 9th Circuit appears to have increased the number of oral arguments that it records on video. Many of those are available at this YouTube link: https://www.youtube.com/user/9thcirc/videos.

If you are coaching students in any upcoming moot court competitions, you might want to make them aware of these videos as a resource.

While I usually only have time to listen to oral argument recordings driving to and from work, I look forward to the day when the Federal Circuit follows the lead of the 9th Circuit and records the video of Federal Circuit oral arguments. Some would be quite interesting to watch.